Ex Parte Cindrich et al

Patent Trial and Appeal Board

Mar 20, 2013

10916649 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte CHRIS N. CINDRICH, RALPH L. SONDEREGGER,
GLADE HOWELL, WESTON F. HARDING,
ALEXANDER G. LASTOVICH, and LIONEL VEDRINE
__________

Appeal 2011-008411
Application 10/916,649
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1, 2, 4, 6, 7, 10-17, 20-24, 26-29, 31, 33-35,
38-45, and 59-64.
1
We have jurisdiction under 35 U.S.C. § 6(b).

1
Claims 3, 5, 8, 30, 36, 37, and 46-58 are also pending, but stand withdrawn
from consideration (App. Br. 4).

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STATEMENT OF THE CASE
Claims 1, 11, 12, 13, 16, and 59 are the independent claims on appeal,
and are reproduced in the Claims Appendix to the Appeal Brief (App. Br.
28-45).
The following grounds of rejection are before us for review:
I. Claims 1, 6, and 10-12 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Cirelli
2
(Ans. 4).
II. Claims 2 and 4 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Cirelli and Bouchard
3

(Ans. 8).
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by Cirelli (Ans. 9).
IV. Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Cirelli and Flaherty
4
(Ans.
9).
V. Claims 16, 17, 20, 21, 23, 24, 28, 29, and 59-63 stand rejected
under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Cirelli and Kriesel
5
(Ans. 11).
VI. Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Cirelli and Kriesel as
further combined with Pinkerton
6
(Ans. 15).

2
Cirelli et al., US 4,886,499, issued Dec. 12, 1989.
3
Bouchard et al., US 6,905,479 B1, issued Jun. 14, 2005.
4
Flaherty et al., US 2003/0073952 A1, published Apr. 17, 2003.
5
Kriesel et al., US 5,693,018, issued Dec. 2, 1997.
6
Pinkerton, US 2003/00736609 A1, published Apr. 17, 2003.
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VII. Claims 31, 34, 35, 38, 40-44, and 64 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
Tsals
7
and Weston
8
(Ans. 15).
VIII. Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Tsals and Weston as
further combined with Gross
9
(Ans. 18).
IX. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Tsals and Weston as
further combined with Grychowski
10
(Ans. 19).
X. Claim 45 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Tsals and Weston as
further combined with Kriesel (Ans. 19).

We reverse.

ANALYSIS
Rejections over Cirelli
The Examiner rejects claims 1, 6, and 10-12 as anticipated by Cirelli
(Ans. 4). Independent claims 1 requires, in relevant part, “a pressurizing
system for pressurizing said chamber when the device is activated.”
Independent claim 11 requires “a pressurizing means for pressurizing said

7
Tsals et al., US 5,858,001, issued Jan. 12, 1999.
8
Weston, US 5,891,086, issued Apr. 6, 1999.
9
Gross et al., US 6,186,982 B1, issued Feb. 13, 2001.
10
Grychowski et al., US 2002/0170928 A1, published Nov. 21, 2002.
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reservoir when the device is activated.” And independent claim 12 requires
“a pressurizing system adapted for pressurizing said reservoir.”
The Examiner finds, citing member 50 of Figure 9, that Cirelli teaches
“a pressurizing system for pressurizing said chamber when the device is
activated” (Ans. 5; see also id. at 7). Specifically, the Examiner finds that
“Cirelli provides negative pressure, which is still a form of pressurization to
the chamber” (id. at 20).
Appellants argue that Cirelli “does not disclose or suggest a system
and method for pressurization of the reservoir of the device. That is, there is
no provision for pressurization of the reservoir, content of the reservoir
and/or chamber of the reservoir” (App. Br. 11).
We agree with Appellants. During prosecution before the Office,
claims are to be given their broadest reasonable interpretation consistent
with the Specification as it would be interpreted by one of ordinary skill in
the art. In re American Academy Of Science Tech Center, 367 F.3d 1359,
1364 (Fed. Cir. 2004). Claim language, however, “should not [be] treated as
meaningless.” Bicon, Inc. v. Straumann Co., 441 F.3d 945, 951 (Fed. Cir.
2006).
The Examiner is interpreting the “pressurizing system” of claims 1
and 12 as reading on a system that provides positive or negative pressure.
We conclude, however, that the ordinary artisan would interpret the
“pressurizing system,” in view of its use in the Specification and its ordinary
meaning, as a system that delivers positive pressure to the reservoir.
The Specification teaches that an “object of the … invention is to
provide a patch-like infusion device which provides pressurizing a content
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reservoir using a bladder and Belleville or other disk-type spring assembly”
(Spec. 3, ¶12). Another object is “to provide a patch-like infusion device
which allows pressurizing the contents of a content reservoir by removing a
Belleville spring retaining disk” (id. at 4, ¶13). Specifically, according to
the Specification, “[a] push type activation assembly is provided which can
then be used to remove a retaining pin and allow a Belleville spring
assembly to apply an essentially even and constant pressure to the contents
of a reservoir assembly” (id. at 5, ¶26). In addition, “pressurize”
11
may be
defined as “to raise the internal atmospheric pressure of to the required or
desired level.” Thus, the ordinary meaning of the term “pressurize,” as well
as how the term is used in the Specification, support the interpretation of
requiring that the pressurizing system be able to apply a positive pressure to
the reservoir. We thus reverse the anticipation rejection as to claims 1 and
12, as well as claims 6 and 10, which depend on claim 1.
Moreover, claim 11 is written in a means-plus-function format,
pursuant to 35 U.S.C. § 112, ¶ 6.
Under that provision, “[a]n element in a claim for a
combination may be expressed as a means or step for
performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be
construed to cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.”

11
pressurize. Dictionary.com. Dictionary.com Unabridged. Random House,
Inc. http://dictionary.reference.com/browse/pressurize (accessed: March 12,
2013).
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WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1347 (Fed. Cir.
1999). Appellants point to paragraph 267 for the support of a pressurizing
means, which refers to a Belleville spring.
Element 50 of Figure 9 of Cirelli is drawn to a pump. As the
Examiner has not pointed out how the pump 50 of Cirelli corresponds to or
is equivalent to the structure disclosed by the Specification, that is, a
Belleville spring, we reverse the rejection as to claim 11.
As to the rejection of claims 2 and 4 as being rendered obvious by the
combination of Cirelli and Bouchard; the rejection of claim 7 as being
rendered obvious by Cirelli; the rejection of claims 13-15 as being rendered
obvious by the combination of Cirelli and Flaherty; the Examiner relies on
Cirelli for teaching a pressurizing system for pressuring the reservoir (see,
e.g., Ans. 8-11). Thus, those rejections fall for the same reason as the
anticipation rejection.
The Examiner rejects claims 16, 17, 20, 21, 23, 24, 28, 29, and 59-63
over the combination of Cirelli and Kriesel (Ans. 11).
Independent claim 16 is also drawn to a device, which requires a
“substantially planar and substantially circular reservoir disposed within said
housing, comprised of a substantially rigid plate and a substantially flexible
membrane bonded thereto, forming a chamber for containing said
medicament.” Independent claim 16 also requires “a pressuring system for
pressurizing said chamber by compressing said membrane.”
Independent claim 59 requires “a reservoir disposed within said
housing, comprised of a substantially rigid plate and a substantially flexible
membrane bonded thereto, forming a chamber for containing said
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medicament,” as well as “a pressuring system for pressuring said chamber
by compressing said membrane.”
The Examiner relies on element 50 of Figure 9 of Cirelli for teaching
a pressurizing system for pressurizing the chamber (Ans. 12). The Examiner
notes that the embodiment shown in Figure 9 of Cirelli “does not disclose a
substantially circular reservoir comprised of a rigid plate bonded to a
flexible membrane wherein the pressurize [sic] system compresses said
membrane” (id. at 12-13). The Examiner notes that Cirelli shows in Figures
1-4 “reservoirs of various shapes comprised of membranes bonded to a rigid
plate wherein the membrane is compressed by a pressuring system” (id. at
13 (citing Cirelli, col. 4, ll. 60-62, as well as membrane 4 of Figs. 1-4). The
Examiner concludes that
It would have been obvious to a person of ordinary skill in the
art at the time the invention was made to use a reservoir with a
pressurized membrane bonded to a rigid plate in the
embodiment of Fig. 9 as in Figs. 1-4 since it has been held that
combining two embodiments disclosed adjacent to each other in
a prior art patent does not require a leap of inventiveness and
involves only routine skill in the art

(Ans. 13 (citing Boston Scientific Scimed v. Cordis, 554 F.3d 982, 991 (Fed.
Cir. 2009)).
The Examiner cites Kriesel for teaching “a delivery device in which
“the needle assembly includes and arcuate needle conduit and stabilizer …
which allows the conduit to move while allowing the housing to remain
stationary” (Ans. 13).
Appellants argue that “the reservoir 55 of the Cirelli … patent shown
in Fig. 9 lacks a system and method for pressurization of the chamber of the
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reservoir” (App. Br. 18). That is, according to Appellants, Cirelli‟s supply
vessel 55 as shown in Figure 9 is never pressurized by the pump 50, and
content is simply drawn from the reservoir 55 by the pump 50 through the
valve action of valves 46 and 49 (id. (citing Cirelli, col. 6, ll. 45-61)).
Appellants further assert as to the embodiments shown in Figures 1-4 of
Cirelli, “propellant addition of the chamber 3 is achieved by using some
outside feature, no pressurization element is included in the device of
… Cirelli” (App. Br. 19). Appellants assert that those deficiencies are not
remedied by Kriesel (id.).
We agree with Appellants that the Examiner has not set forth a prima
facie case of obviousness as to independent claims 16 and 59, as well as the
claims dependent thereon.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007), while the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, it also reaffirmed that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” Id. at 418 (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added).
As our reviewing court has explained, therefore, to support a
conclusion of obviousness, “[w]hether the Board relies on an express or an
implicit showing, it must provide particular findings related thereto. Broad
conclusory statements standing alone are not „evidence.‟” In re Kotzab, 217
F.3d 1365, 1370 (Fed. Cir. 2000) (citation omitted).
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Claims 16 and 59 require pressurizing the chamber (i.e., the reservoir)
by compressing the membrane. As discussed above in the analysis of claim
1, Cirelli does not teach or suggest pressuring the chamber. In addition, the
Examiner does not explain how the pump 50 is used to compress the
membrane 4 to pressurize the reservoir, but only relies on the conclusory
statement that “combining two embodiments disclosed adjacent to each
other in a prior art patent does not require a leap of inventiveness and
involves only routine skill in the art” (Ans. 13 (citing Boston Scientific
Scimed v. Cordis, 554 F.3d 982, 991 (Fed. Cir. 2009)). We do not find the
citation of that case, however, to be sufficient to support a conclusion of
obviousness.
That is, while the Federal Circuit stated in Boston Scientific Scimed
that “[c]ombining two embodiments disclosed adjacent to each other in a
prior art patent does not require a leap of inventiveness,” Boston Scientific
Scimed, 554 F.3d at 991, the Examiner has not explained how the facts in
that case would lead to the same conclusion in the instant appeal. In Boston
Scientific Scimed, at issue was the obviousness of a stent, wherein one figure
depicted a metal stent with a drug-eluting polymer coating, while the figure
below it depicted a stent coated with a second layer of polymer. According
to the court, the ordinary artisan would have been motivated to combine the
two embodiments to obtain the benefit of two layers, that is, limiting
diffusion of the drug. Id.
Here, as explained above, the Examiner has not explained how the
membrane 4 remedies the deficiency of the embodiment shown in Figure 9
of Cirelli, that is, provides a pressurizing system for pressurizing the
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reservoir. We thus reverse the rejection of claims 16, 17, 20, 21, 23, 24, 28,
29, and 59-63 as being rendered obvious by the combination of Cirelli and
Kriesel.
The Examiner rejects claims 26 and 27 as being unpatentable over
Cirelli and Kriesel, as further combined with Pinkerton (Ans. 15).
The Examiner notes that Cirelli “teaches an infusion device
substantially as claimed,” but does not teach “using a pressurizing system
which is a disk spring or a Belleville spring” (id.). The Examiner relies on
Pinkerton for teaching that “infusion of a substance by applying a pressure
on the reservoir and further, that preferred pressure generating means
include gas pressure and Belleville (disk) springs,” concluding that it would
have been obvious “to use a disk or Belleville spring in the device of Cirelli
[ ] to apply pressure to the reservoir to discharge the liquid because
Pinkerton teaches that gas pressure and spring pressure applications are
functionally equivalent” (id.).
The Examiner, however, has not addressed the deficiency of Cirelli,
that is, why one would use a pressurizing system for pressurizing the
reservoir of Cirelli. We thus reverse the rejection of claims 26 and 27.

Rejections over Tsals
The Examiner rejects claims 31, 34, 35, 38, 40-44, and 64 over the
combination of Tsals and Weston (Ans. 15).
Independent claims 31 and 64 require (emphasis added) “an activation
member, disposed within said housing, with a first end and a second end and
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a longitudinal axis, the second end having a pin extending substantially
perpendicular to said bottom surface of said housing.”
The Examiner finds that Tsals teaches a device having an “activation
member, disposed within said housing, with a first end and a second end and
a longitudinal axis, the second end having a pin extending substantially
perpendicular to said bottom surface of said housing adapted for insertion
and removal from the central aperture of the spring” (Ans. 16). Specifically,
the Examiner cites pin 24 in Figures 1 and 2 of Tsals, finding that the “faces
of the pin would extend perpendicular to the bottom surface of the housing”
(id.). That is, according to the Examiner, as a “pin is 3- dimensional it
extends in all directions, and the pin extends perpendicular to the bottom
surface in the direction along the face of the pin” (id. at 21). The Examiner
then relies on Weston for teaching that a stack of Beleville springs may be
used instead of a coil to pressurize a reservoir (id. at 16).
Appellants argue that neither Tsals alone, or in combination with
Weston, teaches or suggests “an activation member with a perpendicular pin
for the insertion into and removal from the central aperture of the disk
spring” (App. Br. 21). Appellants argue that the Examiner relies on the pin
or rod 24 of Tsals, but that element of Tsals is shown extending substantially
parallel to the bottom surface of the device (id. at 22 (citing Tsals, Fig. 1).
In response to the Examiners finding that the pin 24 of Tsals is three-
dimensional, and thus extends in all directions, including a direction
perpendicular to the bottom surface of the housing, Appellants argue that “a
pin extends in generally a single direction, and such direction is generally
understood to correspond to the length of the pin” (App. Br. 22). Appellants
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argue further that the Examiner‟s interpretation reads the term “„extend‟” out
of the claim (id.).
We agree with Appellants. That is, we agree that the Examiner‟s
interpretation is reading the term “extend” of the claim, which we decline to
do. We thus reverse the rejection.
As to the rejection of claim 33 as being rendered obvious by the
combination of Tsals and Weston as further combined with Gross; the
rejection of claim 39 as being rendered obvious by the combination of Tsals
and Weston as further combined with Grychowski; and the rejection of
claim 45 stands rejected under 35 U.S.C. § 103(a) as being rendered obvious
by the combination of Tsals and Weston as further combined with Kriesel,
the Examiner does not rely on any of Gross, Grychowski or Kriesel to
remedy the above deficiencies of Tsals (see Ans. 18-20). We thus reverse
these rejections as well.

SUMMARY
All of the rejections on appeal are reversed.

REVERSED

cdc